Dallas attorneys Edwin Buffmire and Eric Wong recently secured a victory for our client Upper Deck, a California company and one of the leading trading card manufacturers in the United States, in their continuing effort to enforce publicity rights of famous athletes such as Michael Jordan against companies that seek to use their names and/or likeness without permission or compensation.
The opposing party, Leaf Trading Cards, LLC, sells trading cards featuring swatches of athletes’ jerseys as well as their names and sometimes photos. Upper Deck holds exclusive publicity licenses with several notable athletes included in Leaf’s products.
Upper Deck filed claims against Leaf on the grounds that use of the athletes’ names and likeness on the trading cards was a violation of Upper Deck’s and the athletes’ rights. Leaf responded with a motion to strike Upper Deck’s complaint on First Amendment grounds arguing that its cards and the sale of the athletes’ cards was protected speech. The United States District Court for the Northern District of Dallas ruled for Upper Deck, holding that Leaf’s use of the athletes’ likenesses on their trading cards was not a protected activity.
The court observed that there is a tension between the right of publicity, recognized by California (and other states) as the exclusive right of a specific person or entity to use a celebrity’s name, voice, signature, or likeness for commercial purposes, and the constitutional protections afforded free speech. To address that tension, the use of a celebrity likeness is considered protected speech if the work in question adds significant creative elements so as to “transform” that work into something more than a celebrity likeness.
The court held that Leaf’s use of the athletes’ likenesses on its trading cards was not transformative and therefore not protected activity. The court observed there were no literary or artistic devices used to transform the cards. Instead, the Leaf cards derive their value entirely from the use of the names and likenesses of the athletes they depict. Leaf’s sale of products bearing the athletes’ names and likeness found no protection in the First Amendment.
This favorable decision comes after Jackson Walker successfully defeated Leaf’s attempt to seek an expedited temporary restraining order against Upper Deck asserting antitrust claims under the Sherman Act.
Edwin Buffmire represents clients in antitrust, class action, trade secret, white collar, and other complex and sensitive disputes in Texas and across the nation. Edwin has built successful strategies for clients in a variety of industries, including obtaining dismissals for insurers in three class actions, defending an energy client against allegations of anticompetitive conduct in the natural gas industry, securing two full defense verdicts at trial for a securities brokerage firm against RICO claims, and defending media clients against a putative nationwide class asserting conspiracy allegations.
Eric Wong is an associate in the Litigation section of the Dallas office. Prior to joining the firm, Eric interned at both the Railroad Commission of Texas and the Texas General Land Office. He has experience working with government contracts and leases, as well as issues regarding eminent domain, administrative procedure, and other regulatory issues.